Patent Review Committees as a management microcosm – four general management lessons

Companies that generate even a modest number of potentially patentable ideas almost always put in place a group that reviews the invention disclosures and determines which of them ought to be patented and in which jurisdictions.

Often called a Patent Review Committee, the group typically consists of someone from marketing, someone on the commercial side, a technical guru, and a patent lawyer. At the meetings they may invite inventors (See my posts of Oct. 10, 2006 on Dial and Avery Dennison; July 25, 2007: Halliburton Energy; and April 8, 2006: University of Virginia.). They gather periodically to make their decisions and shape patent strategy for the company in a domain that presents many difficult judgments (See my posts of March 21, 2006: slender payoff fr m patent activity; and Jan. 3, 2006: value delivered from patents.).

Patent Review Committees exemplify several principles of management that are important to law departments more generally. They illustrate how lawyers can and should be involved at the very beginning of potential legal work. Here it is the decision whether to file a patent application; more broadly lawyers ought to be brought in at the right moment where legal advice has the most influence (See my post of March 23, 2008: compile when lawyers are asked to first be involved.).

Another principle: When you are an in-house lawyer, work closely with your clients. Here, R&D, marketing and commercial executives sit shoulder-to-shoulder with the IP lawyer; elsewhere, all in-house attorneys should get out and mingle with their clients (See my post of March 4, 2007: Reebok’s Rules.).

The third principle concerns control of workflow. The patent lawyers can tell everybody concerned what the backlog is and time to completion and they can also influence directly how much work they have to do in the future. More generally, law departments should not be passive about receiving work but should shape their priorities and to some degree the flow of work into the department (See my post of Sept. 22, 2006: consequences when a law department markets its services.).

Fourth, Patent Review Committees implicate use of outside counsel, since many times companies turn to law firms to draft patent applications and prosecute them. So to do many other legal issues call for the expertise of outside lawyers.